Often times the hard part of a stipulation is just convincing everyone that they're not secretly giving up the farm. Lawyers are used to looking for hidden hooks in every proffered bite, and it's hard to convince us that this one is just tasty fish. We've all heard some scary store about a stipulation that gave away too much and changed the course of a case.
This is one of those stories . . .
But it turns out fine in the end.
UCB, Inc. et al v. Annora Pharma Private Ltd., C.A. No. 20-987-CFC (D. Del. Aug. 16, 2023), dealt with a patent for an anti-seizure drug compound. The defendants conceded infringement, but contested validity on obviousness grounds. At the bench trial, both sides presented evidence on whether:
- A POSA would have been inclined to start with the structurally similar prior art anti-seizure drug levetiracetam as the lead compound, and
- If so, whether it would have been obvious to modify levetiracetam to arrive at the patented compound.
After trial, however, the parties stipulated to the first point, with Plaintiff only reserving the following rights
Nothing in the preceding paragraph shall prevent any party from citing to any evidence adduced at trial to support facts related to any issue relevant to the validity of Claim 5 of U.S. Patent No. 6,911,461, including to support facts relating to motivation to modify levetiracetam, motivation to combine references, reasonable expectations of success, objective indicia, or any other factors considered under [KSR].
Id. at 11 (emphasis original).
Judge Connolly expressed some small shock that the plaintiff had conceded this point, noting that the reasons for this stipulation were "unclear" and even stating that "compelling evidence [was] adduced at trial that an artisan would not have been motivated to select levetiracetam as a lead compound." Id. at 11, 12.
Even worse, judge Connolly found that the reservation of rights was illogical, and thus ineffective:
As a matter of logic and common sense, an artisan would not have chosen a lead compound "for further development efforts" (i.e., to engage in further efforts to develop an anti-seizure drug) unless the artisan had been motivated to modify that lead compound. Thus, if an artisan of ordinary skill "would have chosen levetiracetam as a lead compound for further development efforts then that artisan necessarily would have had a motivation to modify levetiracetam. Accordingly, notwithstanding UCB's putative reservation of rights in paragraph 2 of the stipulation . . . UCB' s concession in paragraph 1 of the stipulation that an artisan of ordinary skill would have chosen levetiracetam as a lead compound for development of new anti-seizure drugs is also a concession that an artisan would have been motivated to modify levetiracetam to develop new anti-seizure drugs.
Id. at 11-12.
As my people say, Oof-da.
Despite this concession, it all turned out fine for plaintiff in the end, with the Court finding that it would not have been obvious to modify the lead counsel in the way defendant's proposed.
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